DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of claims 4-7 in the reply filed on 12/05/2025 is acknowledged. Claims 1-3 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 4-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 4, the outer layers and exterior members are recited in an unclear and indefinite manner. The first outer layer installation process includes a step “in which an exterior member as one outer layer among a plurality of exterior members…is installed on a jig plate.” The claim goes on to recite a second outer layer installation process which includes a step “in which the exterior member as another outer layer among the plurality of exterior members…is placed…”. It is unclear whether “the exterior member” in the second outer layer installation step is the same or different from the previously recited exterior member in the first outer layer installation process. Based upon the instant specification and figures, it appears that there are two separate exterior members on opposing sides of the protection target. Applicant should clearly recite two separate exterior members rather than referring to each one as “the exterior member.” For example, the claim could recite a first exterior member and a second exterior member. Examiner notes that this issue persists in all dependent claims and renders such claims indefinite as well. Correction is required throughout the claims for definiteness.
Claim 4 recites the limitation “an inner layer installation process in which a protection target part…is routed in the exterior member.” The claim then goes on to recite “the exterior member on which the protection target part is placed.” It is unclear from these two different recitations whether the protection target part is routed in the exterior member or placed on the exterior member. For examination purposes, the claims have been construed as reciting a protection target part which is placed on the exterior member.” Consistent terminology should be used throughout the claims.
Claim 4 recites “a joining process in which the plurality of exterior members are joined together.” This is unclear because only two exterior members are described clearly within the claim. It is unclear whether any additional exterior members are present and how such members are utilized within the method. For examination purposes, the claim has been construed as reciting two exterior members which are joined.
Claim 5 recites “an exterior member of an inner layer” in line 5 and again in lines 13-14. It is unclear what is meant by an exterior member of an inner layer because exterior and inner are antonyms which are mutually exclusive. It is unclear how a single member may form both an inner layer while also being an exterior member.
The repeating steps of claim 5 are unclear and indefinite. The claim recites “alternately repeating routing of the protection target part and installation of an exterior member of an inner layer within the plurality of exterior members.” It is unclear whether separate protection target parts and exterior members are utilized in each step or if single parts are repeatedly routed and installed. The claim has been construed as reciting alternately installing protection target parts and inner layers during the inner layer installation process.
Claim 7 recites the limitation “the tube is penetrated into the exterior member” in line 12. It is unclear which exterior member is being referred to in such limitation because multiple exterior members are previously recited. For examination purposes, any tube which penetrates one or more exterior members will be considered to meet the limitation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 9 of co-pending Application No. 18/625,211 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are also presented in the reference application. The reference application only differs in that it has more narrow claims which also recite a mold release member installing process.” Since all of the limitations of claims 4-6 are found in claims 1, 5, and 9 of the reference application, the instant claims would have been anticipated by those of the reference application and are therefore not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakajima (US 2017/0327060).
Nakajima teaches a method of making a wire harness (10), the method comprising: placing first-side nonwoven plates (21a,22a,23a) on a work table (T), placing a wire bundle (11) on the first-side nonwoven plates, placing second-side nonwoven plates (21b,22b,23b) on the wire bundle and first-side nonwoven plates, and bonding the first- and second-side nonwoven plates by welding (See Figures; [0029]-[0042]; [0053]-[0058]). The first-side nonwoven plates, work table, wire bundle, and second-side nonwoven plates read on the instantly claimed first outer layer, jig plate, protection target part, and second outer layer, respectively. The welding step reads on the instantly claimed joining process. Regarding the first exterior member having a meshed sheet shape, Nakajima shows exterior members with regularly spaced through hole portions (See Figures) and also discloses nonwoven fabrics, woven fabrics, knitted fabrics, and other flexible lightweight porous materials (See [00038]-[0040]), all of which have a meshed sheet shape as claimed.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US 2017/0327060).
Nakajima teaches a method of making a wire harness, as detailed above.
Regarding claim 5, Nakajima teaches a single step of placing a wire bundle (11) on the first-side nonwoven plates and a single step of placing second-side nonwoven plates (21b,22b,23b) on the wire bundle and first-side nonwoven plates, as detailed above. Nakajima does not expressly disclose repeating these steps to provide additional layers as claimed. The repetition of known prior art steps does not patentably distinguish the claimed invention from the prior art unless a new or unexpected result is achieved. In this case, repeating the placing steps provides a predictable result of creating additional layers of wires and nonwoven plates and therefore would have been obvious to one of ordinary skill in the art at the time of filing.
Regarding claim 6, Nakajima teaches that the work table includes support jigs (J1) in the form of support pins which serve as wiring guides (See Figures; [0045]-[0046]). Using the work table support jigs as wiring guides reads on the instantly claimed step of passing the protection target through a gap between two electric wire routing pins along a routing path for the protection target part on the jig plate. Nakajima also teaches that the first- and second-side nonwoven plates include through hole portions (21h,22h,23h) through which the support pins are inserted (See Figures; [0045]), which reads on the instantly claimed step of inserting the routing pins into mesh through holes of the exterior member in the respective installation processes.
Claim 6 also recites the limitation “the wire routing pin thicker than a mesh through hole in the exterior member.” While Nakajima does not expressly disclose this relationship, there are only three possible relationships between the size of the through hole portions and the support pin thickness in the method of Nakajima: equal size, pins larger than holes, and pins smaller than holes. Since there are only three possible relationships, each with a predictable result for how the plates would be supported on the work table, the selection of such a relationship would be a routine matter of design choice for one of ordinary skill in the art which does not patentably distinguish the claimed invention from the prior art.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US 2017/0327060), as applied to claim 4 above, and further in view of Gotou (US 2013/0292159).
Nakajima teaches a method of making a wire harness, as detailed above.
Nakajima does not expressly disclose eyelet fasteners comprising a tube and a collar which are installed on the jig plate, penetrate an exterior member, and then crimp the exterior members together.
Gotou teaches a method of manufacturing a wire harness (11), the method comprising: laying a second sheet material (29,75) on an operation bench, placing wires (13) on the second sheet material, and covering the wires with a first sheet material (27,73), wherein the first and second sheets materials are adhesively bonded to one another to form the wire harness (11) (See Figures; [0045]-[0050]; [0063]-[0065]; [0084]-[0087]). The step of laying the second sheet material on the operation bench reads on the instantly claimed first outer layer installation process of installing a first sheet-like exterior member on a jig plate. The step of placing wires on the second sheet material reads on the instantly claimed inner layer installation process of routing at least one protection target part/routing wire to the first exterior member. The step of covering the wires with the first sheet material reads on the instantly claimed second outer layer installation process of overlaying a second sheet-like exterior member on the protection target part. The adhesive bonding reads on the instantly claimed joining process in which first and second exterior members are joined together.
Gotou teaches clamps (33) which include a central shaft (39) and a pressure generating part (37) extending from the central shaft, wherein the shaft penetrates a hole (31) of the second sheet material and crimps the first and second sheet materials (See Figures; [0052]-[0065]). The clamp, central shaft, and pressure generating part read on the instantly claimed eyelet fastener, tube, and collar, respectively.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the clamps of Gotou in the method of Nakajima. The rationale to do so would have been the motivation provided by the teaching Gotou that to do so would predictably allow the wiring harness to be installed at a desired location (See [0003]; [0058]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARSON GROSS whose telephone number is (571)270-7657. The examiner can normally be reached Monday-Friday 9am-5pm Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CARSON GROSS/Primary Examiner, Art Unit 1746